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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Could Have Gone to Asda!

In Specsavers International Healthcare Limited v Asda Stores Limited [2010] EWCH 2035 (Ch), Asda sailed a little close to the wind by mimicking Specsavers' well-known logo and slogan.


Specsavers was founded in the UK in 1984 and is latterly known for its Specsavers logo consisting of two green overlapping ovals and its memorable Should have gone to Specsavers slogan. According to Mr Justice Mann, Specsavers opticians are at the "value" end of the market as opposed to the "quality" end, a market position with which Asda quite rationally wished to compete, also being a "value" goods and service provider. It was the manner in which they pursued this value end market position that left Specsavers feeling rather disgruntled.

In October 2009, Asda launched a marketing campaign for their instore opticians using a logo consisting of two "kissing" white ovals containing the words, in green, ASDA Opticians. This was displayed predominantly on posters and boards on a green background above the optical section in Asda stores and also on the Asda website. On their recall cards, this logo was reversed, so the ovals were green and the writing white. Asda also launched their new straplines Be a real spec saver at Asda and Spec savings at ASDA, which appeared on posters and other materials.

Specsavers took exception to Asda's campaign and sued for infringement under Articles 9(1)(b) and (c) of the Community Trade Mark Regulation claiming that they had witnesses who were confused by Asda's logo and straplines; that Asda's use created a link with Specsavers in the mind of customers; that Asda was taking unfair advantage of Specsavers' distinctive reputation by riding on its "coat-tails"; that Asda had caused detriment to the reputation and distinctive character of Specsavers' mark because Asda had lower standards in relation to professionalism of service and range of goods; and because marks as a whole become less distinctive when "aped". Specsavers also filed a passing off action. Specsavers based the infringement action on two CTM registrations for the word SPECSAVERS, two CTM registrations for the shaded Specsavers logo, a CTM registration for the unshaded version of that logo and a CTM registration for a wordless, unshaded logo mark. The latter, however, was revoked for non-use.

Asda claimed that they never had any intention of copying Specsavers' trade marks, but simply wished to parody them, so that upon seeing Asda's new campaign, customers would think to compare Asda's optical goods and services with those of Specsavers to see whether Asda was better value. Asda's pre-launch communications revealed their intention to have "fun" and be "cheeky" in their campaign and to be "aggressive". Although they wanted to get as close to Specsavers' brands as possible, it was clear from the pre-launch communications that Asda did not wish to copy Specsavers' brands. This claim was supported by their evidence that legal advice was sought on Asda's position with regard to their intended campaign. 

Firstly, Mr Justice Mann looked at the Article 9(1)(b) infringement claim in respect of the Asda logo. The witness evidence submitted by one individual claiming to have been momentarily confused as to the origin of an Asda recall card was dismissed as being atypical. A survey submitted by Specsavers alleging that 6% of the 244 interviewees identified Asda as the place where they could buy Specsavers glasses was, unsurprisingly, given no real weight in identifying confusion. Mr Justice Mann then looked at Specsavers' evidence allegedly showing Asda's "living dangerously" by seeking to get as close as they could to Specsavers' marks. He considered that Asda's design choice was made "with one eye on Specsavers' logo... with a view to being as close to it as was safe". Further, Asda's decision to use green wording on a white background was a big step in removing one perceived element of association. Other evidence of confusion was given little or no weight.

On this count, the Court held that Specsavers' claim failed. Whilst the ovals in Specsavers' logo were similar to those in Asda's logo, they were not identical and did not dominate the mark. The different wording on each logo served to significantly distinguish the marks and the context of Asda's actual use in Asda stores of its logo reinforced this conclusion, as did the use of the inverted colour scheme. Although the logo colourways on the recall card was the same as Specsavers', the logo still clearly displayed the word ASDA.

Secondly, the Court looked at the Article 9(1)(b) infringement claim in respect of the straplines. Mr Justice Mann concluded that Asda's "spec saver" in the strapline Be a real spec saver at Asda and "Spec savings" in the second strapline Spec savings at ASDA both qualified as signs for the purpose of Article 9, since they "have the quality of being unconventionally proximately placed words which are apparently designed to be more than just a form of words...They strike one as being intended to have a particular impact: they are a sign". Although admittedly closely similar to Specsavers' word mark, the Court did not believe that the notional consumer would consider there to be an economic association between the two parties when faced with the sign "spec saver" within the strapline Be a real spec saver at Asda. In Mr Justice Mann's opinion, the relevant consumer would see the word Asda at the end of the strapline and elsewhere on the poster and would consider that a "spec saver" was a person who wishes to save money on spectacles.

Thirdly, the Court looked at the strapline Spec savings at ASDA in relation to Article 9(1)(b) and held that "Spec savings" is significantly different to Specsavers, the noun having been changed completely from "savers" to "savings". The appearance of the word Asda in this strapline took it even further away from Specsavers' mark.

Turning to the Article 9(1)(c) infringement claim, Mr Justice Mann considered that whether one took the whole strapline Be a real spec saver at Asda or just the words "spec saver", Specsavers and its word marks were clearly called to mind. Asda's use of "spec saver" gave Asda the advantage of conveying to its customers that they would get a better deal at Asda than at Specsavers. Asda wished to establish a reputation for value and in drawing attention to this via this strapline they aimed to draw on Specsavers' already established reputation for value. This was intentional and therefore gave rise to an unfair advantage, resulting in a finding of infringement. The Court held that "unfair use is commandeering part of the reputation of a brand with a view to affixing the qualities to one's own and then being better still". Asda did not avoid this finding by pointing out, correctly, that the underlying theme was comparative advertising.

The second strapline and the logo were both found not to infringe under Article 9(1)(c) for similar reasons as set out above.

Specsavers' passing off claim also failed, since none of the trade marks gave rise to confusion nor to a misrepresentation, appearing plainly with the word Asda and in Asda shops. It was held that Asda did not intend to mislead as to trade origin. 

Comment

Specsavers were not exactly saints themselves in this case. Prior to Asda's launch, a confidential design document fell into Specsavers' hands. Did they take the moral high ground? No, they used that information to form a pre-emptive strike, launching their own identical offer, thus gaining commercial advantage. Asda has filed a counterclaim based on this misuse of confidential information.

This is not the first time Asda has chosen to "parody" another company's product (see, for example Asda's take on Unilever's trade mark I can't believe it's not Butter which was You'd Butter Believe It!). The writer believes it's fair to say that this won't be the last instance of copycat branding on Asda's part. However, as long as they keep living dangerously, with a sprinkling of caution, they will no doubt continue to "stand on the shoulders" of other manufacturers or service providers. All's fair in love, war and business!